WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GA Modefine S.A. v. AMG
Case No. D2001-0320
1. The Parties
Complainant is GA Modefine SA., having registered offices in 90, Avenue de France – CH – 1004 Lausanne, Switzerland. The Complainant’s authorized representative in this administrative proceeding is Mariacristina Rapisardi, Studio RAPISARDI S.A., Via Ariosto, 6 – 6901 Lugano, Switzerland.
The Respondent is AMG, PO Box 67 – Farnham – Surrey GU9 8YR, United Kingdom. The administrative contact is Mr. Matthew Wilkinson of Xclusive Sounds, 7 Priority Court, 1 Fresham Road Farnham, Surrey GU9 8HA, United Kingdom.
2. The Domain Name and Registrar
This dispute concerns the domain name <armani-on-line.com>; hereinafter referred to also as the "Domain Name". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received a complaint (hereinafter the Complaint) by email on March 5, 2001 and in hardcopy and exhibits on March 9, 2001. On March 8, 2001, the Center transmitted via email to Network Solutions, Inc., a request for registrar verification in connection with this case. On March 12, 2001, Network Solutions, Inc. transmitted via email to the Center, Network Solutions, Inc.'s Verification Response, confirming that the registrant is AMG and that the Domain Name registration is in "active" status.
Having verified that the Complaint satisfied all the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), the Center transmitted on March 14, 2001, to AMG the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and email (without enclosures). On the same day, the Center transmitted via email, copies of the foregoing documents to the complainant’s representative and to Network Solutions Inc.
On April 3, 2001, having received no Response from the Respondent, the Center issued a Notification of Respondent Default. No reply by Respondent to the Notification of Respondent Default was received.
On April 5, 2001, in view of the Complainant’s designation of a single member panel the Center invited Mr. Luca Barbero to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received Mr. Luca Barbero's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted on April 11, 2001 to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date for April 24, 2001, in which Mr. Luca Barbero was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
Therefore, the Panel shall issue the Decision on the basis of the Complaint, the Policy, the Rules, the Supplemental Rules and any rules and principles of law deemed applicable, without the benefit of any Response from Respondent.
4. Factual Background
The Complaint is based on a number of registrations for the trademarks GIORGIO ARMANI, ARMANI and EMPORIO ARMANI.
The Respondent registered the domain name <armani-on-line.com> on March 2, 2000.
5. Parties’ Contentions
The Complainant "owns several trademarks worldwide known, the Armani Trademarks, as GIORGIO ARMANI, ARMANI and EMPORIO ARMANI". Said trademarks are used for different kinds of goods, such as clothes, glasses, perfumes in many classes as 3, 8, 9, 14, 18, 20, 21, 24, 25, 34 with registrations in Europe, United States of America, Canada, International Registrations and other registrations in many countries.
The notoriety and diffusion of Armani trademarks are also proved by the several articles, which constantly appear throughout the world on fashion magazines and on the most important newspapers. The Panel is informed that "the right of the Complaint has been confirmed by two positive decisions rendered by WIPO Arbitration and Mediation Center (WIPO Case No. D2000-0305 GA Modefine SA v. Armani International Investments and WIPO Case No. D2000-0306 GA Modefine SA v. AES Optics)".
AMG has registered a domain name consisting in the name "ARMANI" of one of the most famous Italian fashion stylist who designs and sells exclusive products offered to selected customers. Complainant states that "the lack of rights and lawful rights of the defendant in respect of the contested domain name is proved by the fact that AMG has no right or legitimate interest in respect of wording Armani".
The bad faith of the Respondent in the registration of the Domain Name is proved by two circumstances.
Firstly, the registration of domain name consisting in a family name of a worldwide famous fashion stylist reveals the intention of AMG to exploit the notoriety and importance of said name and to take advantage from the unlawful use of the trademarks comprehensive of that name owned by Modefine, provided that at the time of the registration of the Domain Name AMG was certainly aware of the fame and worldwide relevance of Armani trademarks.
The intention of AMG to exploit the trade marks of Modefine is confirmed by the fact that AMG uses the name of one of the most fashion stylist in the world in order to distinguish itself among the hundreds, if not thousands, of sites which offer registration of domain names; in fact the site corresponding to the domain name <armani-on-line.com> hosts the banner of another site <domainvalet.com> trough which are sold domain names and internets spaces.
Complaint underlines that "in this way, the user who wants to visit the site of the renowned fashion designer, visits also the defendant site which offers domain names registrations that the user was not interested to visit. Therefore, it is confirmed that the use made by the Respondent of the contested Domain Name is unlawful and infringes our client’s rights."
Secondly, the bad faith is also proved by the fact that the Respondent has registered several domain names with which it is likely that AMG has not any relationship in particular names of famous actors like <liztaylor.org>, <billcosby.org> and shops, banks like <disneybank.net>, <bankswisss24x7.com>, <blockbusterchina.com>.
In accordance with Paragraph 4(b)(i) of the Policy, for the reasons described above, the Complainant "requests the Administrative Panel appointed in this administrative proceeding issue a decision that the contested Domain Name be transferred to the Complainant".
Respondent has not contested the allegations of the Complainant and is in default.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and is being used in bad faith.
6.1. Domain name identical or confusingly similar
The Complainant has provided evidence of ownership of several trademark registrations and applications for ARMANI in different countries, including the UK registration n. 1287747 of October 1986 in class 25 for the word mark ARMANI.
In view of the above, the Panel finds that the Complainant has proved that the Domain Name is confusingly similar to the trademark of the Complainant according paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and legitimate interest
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
Furthermore, there is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademark and name under any circumstance.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Name, according to paragraph 4(a)(ii) of the ICANN Policy.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
Panel finds the paragraph iv) applicable in the instant case since the Domain Name pointed at a page where domain name registration and hosting services of a Provider were advertised and sold (Annex F of the Complaint). It cannot be excluded that such commercial activity was intentionally requested or authorized by the Respondent and that a commercial gain was generated therein. Furthermore, the Panel finds that such web site may have attracted Internet users seeking information about the famous Italian fashion stylist and was likely to create confusion as to the source, sponsorship, affiliation or endorsement by the Complainant. It is noted that at the time of the drafting of the present decision the Domain Name <armani-on-line.com> does not point to an active web page any more.
Pursuant to the interpretation of the ICANN’s Uniform Domain Name Dispute Resolution Policy in a case of passive holding of the domain name first provided in Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003) and in a number of following decisions such as Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, (WIPO Case No. D2000-0021); Compaq Computer Corp. v. Boris Beric, (WIPO Case No. D2000-0042); Guerlain, S.A. v. Peikang, (WIPO Case No. D2000-0055); Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO Case No. D2000-0468), the Panel has also taken into consideration the following particular circumstances for the assessment of bad faith.
(a) Complainant’s trademark has a strong reputation and it is known in the UK, where the Respondent is based, and in a number of different countries of the world.
(b) Respondent knew or should have known of the existence of the Armani well-known trademark.
(c) Respondent has provided no evidence of nor alleged any actual or contemplated good faith use of the Domain Name.
(d) Respondent failed to respond to the Complaint at issue or to deny any of its allegations.
(e) It is not possible to conceive of any legitimate, actual or contemplated, active use of the instant Domain Name by the Respondent.
In view of the above, the Panel finds that Respondent registered and used the Domain Name in bad faith, according to paragraph 4(a)(iii) of the ICANN Policy.
In light of the foregoing, the Panel decides that the Domain Name registered by the Respondent is confusingly similar to the Complainant's trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and used in bad faith. Accordingly, the Panel requires that the registration of the domain name <armani-on-line.com> be transferred to the Complainant.
Dated: April 21, 2001